2009年3月17日火曜日

Structure of a DecisionWhy Is the Structure of a Decision Relevant to Examiners? Helps examiners navigate a decision to more quickly and easily identify examination tips

The Dirty Little Secret It may not be necessary to read the entire case to decide whether it is relevant. Go to specifically the cited text and read it in context first If relevant, then read the other parts of the case that are pertinent to examination.

Parts Not Relevant to Examiners Jurisdictional Statement One sentence statement explaining the basis for the court’s authority to decide the case Standard of Review Test used by court in deciding whether to interfere with a decision of Board/lower court Conclusion Statement addressing relief sought by plaintiff/appellant (e.g., affirm, reverse, affirm-in-part and reverse-in-part, or remand)

Introduction One sentence summary of who is seeking review and on what issue One sentence summary of outcome with short reason

Procedural History Description of action in lower tribunal Decision of lower tribunal Reasoning of lower tribunalBe careful not to confuse reasoning of lower tribunal with that of Court issuing the decision

Discussion Issue Sometimes, court will present the parties’ arguments before identifying the legal issue.Be careful not to confuse parties’ arguments with the Court’s decision and reasoning Relevant law Application of law to facts with decision on issue and explanation of reasons for decisionRelevant legal principles, analysis, and phraseology will be found here

Holding Court’s ultimate legal conclusion on an issue Under this law, with these facts, this result “We hold” Use extreme caution in classifying a statement by a court as a holding Courts use the “hold” sparingly; do the same MPEP usually captures holding for most cases

Dicta—It’s Dangerous Dictum (singular): Dicta (plural)Statement or observation made by a judge that does not form a necessary part of the court’s decision, but is includedin the body of the court’s opinion Court said it, but not needed to reach decision Attorneys may cite dicta in arguing against a rejectionDICTA IS NOT A HOLDING

Holding v. Dicta(Example) In eBay v. MercExchange, 547 U.S. 388 (2006), the Supreme Court addressed issue of whether patentee MercExchange was entitled to a permanent injunction. Supreme Court observed that the district court denied a permanent injunction because patentee MercExchange expressed a willingness to license its patents, showing it would not suffer irreparable harm if an injunction did not issue.

Sources of Confusion Syllabus — summary of decision Don’t cite or quote because not authored by the Court Prepared by publisher

 Headnotes — summary of decision Don’t cite or quote because not authored by Court Prepared by publisher

Remember the Dirty Little Secret It may not be necessary to read the entire opinion to decide whether a case is relevant Go to specifically cited text and read it in context first If relevant, then read the parts of the case pertinent to examiners

PrecedentOpinion Type Majority Forms the opinion for the court Presents the holding and rationale for the court Concurrence Agrees with ultimate outcome, but for different reasons Written by one or more judges Judge in the majority may also be in concurrence Dissent Disagrees with ultimate outcome Written by one or more judges Dissenting judge is not part of majority Plurality No majority; fractured opinion with multiple judges going different ways for different reasons

Happens with appellate court sitting en banc or Supreme Court

Importance of Opinion Type Decision of the court is found in the majority opinion Any statements in the concurrence or dissent are for a single judge only; such statements are not the opinion of the court and are not binding on the court If concurrence or dissent is cited, the authoring judge should be mentioned to indicate that the cited statement is from that judge and does not represent the view of the court

Binding v. Non-Binding Decisions Binding  Precedential (Court and BPAI) Decision will add to body of law All lower tribunals must follow Not Binding  Non-precedential (Court and BPAI) Decision will not add to body of law Binds only the parties  Informative (BPAI only) Helps clarify the law Binds only the parties  Other (BPAI only) Binds only the parties

What Decisions Are Binding on Examiners?Technically, all binding decisions issued by the BPAI and courtsHowever, examiners are to follow the cases cited in the MPEP or those endorsed by Patent PolicyIf a decision is new or not discussed in the MPEP, consult SPE before citingWhy? The Office has to interpret a decision before applying it to examination, e.g., KSR v. Teleflex

Why Is Precedent Important?Examiners should only rely on decisions sanctioned for use by the Office to support a rejection.If an applicant cites a non-binding decision to argue against a rejection, the examiner need not follow it because it is not binding.

 Trick: If the facts of an application under examination are similar to those in a non-binding decision, the examiner may want to carefully review the reasoning applied by the tribunal that issued the non-binding decision. If the non-binding decision helps the rejection, then the examiner may use the reasoning, but not cite the decision. If the case hurts the rejection, then the examiner may want to withdraw the rejection or attempt to distinguish away the non-binding decision without citing or discussing it.

Laboratory ExercisesProtocol (cont.) When case law is cited by Applicant, how should an Examiner address it? MPEP is always the starting point. 2 Step process:  (1) MPEP;  (2) Case itself, if necessary, using USPQ database Sample strategies: Step 1: MPEP  Find specific case in MPEP using MPEP Insight (narrow approach)  Do a “concept search” to find topic for which case is cited using MPEP Insight; should lead to specific case along with others (broad approach) Step 2: Retrieve and read case, if necessary, using USPQ database

Exercise #3(Applicant Response) Amend claim, adding a negative limitation to exclude S. pyogenes infection Amended Claim 1: A method of treating a bacterial infection comprising administering to a patient antibiotic X, wherein the infection is not caused by S. pyogenes Add claim with a negative limitation to exclude S. aureus infection Added Claim 2: A method of treating a bacterial infection comprising administering to a patient antibiotic X, wherein the infection is not caused by a methicillin resistant S. aureus.

Exercise #3(Final Rejection) Rejection of claim 1 under 35 U.S.C. § 112, 1 on grounds that the original application provided no support for excluding the treatment of a S. pyogenes infection No rejection of claim 2 because the specification expressly teaches that antibiotic X may not treat methicillin-resistant S. aureas infection

Exercise #3(MPEP) MPEP discusses Johnson in the following sections: MPEP § 2164.08 MPEP § 2173.05(i) MPEP alone is probably not enough. It suggests that Applicant’s characterization of Johnson is correct. It is necessary to read and understand the decision to figure out how to respond.

Exercise #3(In re Johnson Decision) Johnson claimed a genus, but later amended the claim to exclude two species to overcome prior art. CCPA found amended claim was supported by specification: Specification is directed to claimed polymers 26 example polymers described in specification; only 23 of them within scope of claims Applicant is entitled to claim less than full disclosure

Exercise #3(Examiner’s After Final Response) Applicant correctly characterizes Johnson; that case stands for proposition that a negative limitation may be added to claim so long as adequate written description support for it exists in the specification Problem here is that specification does not provide inherent support for excluding a S. pyogenes infection from treatment with antibiotic X Specification excludes only methicillin-resistant S. aureus infection

Exercise #3 (cont.)(Examiner’s After Final Response) Nothing in specification about relationship between S. pyogenes infection and methicillin-resistant S. aureus infection Skilled artisan therefore would not inherently understand that antibiotic X could not be used to treat S. pyogenes infection